EPO decisions

Technical Board of Appeal (‘TBA’) decisions are available on the EPO website at http://legal.european-patent-office.org/dg3/updates/index.htm and similarly decisions of the Enlarged Board of Appeal (‘EBA’) can be downloaded from www.european-patent-office.org/dg3/g_dec/index.htm. A list of the matters pending before the Enlarged Board is included at www.european-patent-office.org/dg3/g_dec/pending.htm

Recent notices and press releases of the EPO are published at www.european-patent-office.org/news/info/index.htm and www.european-patent-office.org/news/pressrel/index.htm respectively, and recent issues of the Official Journal can be downloaded from www.epo.org/law-practice/legal-texts/official-journal.html

Description amendments –Article 84 EPC and rule 42(1)(c) EPC

T 2194/19: Error-correcting code interleaver / Terayon Communication Systems, Inc.

TBA decision, 24 October 2022

Chairman: K. Bengi-Akyürek

Members: K. Peirs and F. Bostedt

This was an appeal by the patentee following a decision of the Examining Division to refuse the patent application. The interesting part of the decision relates to the requirement in the EPO guidelines for the description in the patent to be amended in line with the allowed claims.

The application concerned the transmission of communication data via interleaving using error correction. The Examining Division had refused the patent amongst other reasons because the patent described embodiments with a larger memory size than that allowed in the claims, and therefore did not comply with the requirements of rule 42(1)(c) EPC, namely that the description must disclose the invention, as claimed, in such terms that the technical problem and its solution can be understood. The Examining Division had stated that the ‘invention’ must always be the ‘invention claimed’ and the ‘invention’ was defined by the independent claims.

Citing T 944/15, the TBA disagreed that the invention must always be the invention claimed. They also held that there was no requirement in the EPC that all embodiments in the description of a patent application must fall within the scope of the claims. Such a requirement could also not be derived from the case law of the Boards of Appeal.

The TBA noted that there may well be cases where there are inconsistencies or contradictions between the claims and an embodiment of the description where a legitimate objection may be brought but such cases have to be justified by the Examining Division. A mere indication that an embodiment is not within the claims is not sufficient.

In any event, the TBA strongly disagreed that rule 42(1)(c) EPC could be used as the legal basis for establishing a broad requirement for the description to be amended to the allowed claims. The TBA stated ‘it is simply not what this provision says. Rule 42(1)(c) EPC requires that the description discloses the invention, as claimed, in such terms that the technical problem and its solution can be understood, and that it states any advantageous effects of the invention with reference to the background art… These requirements… cannot be taken to mean that all the embodiments described in the description of a patent application have to fall within the scope of the claims.’

The TBA overturned the decision and remitted the case back to the Examining Division for further prosecution.

This is yet another case from the TBA finding that there is no legal basis in the EPC for the requirement that parts of the description no longer covered by the claims should be deleted or marked as not-related to the invention (see previous decisions T 1989/18 and T 1444/20). There are a number of other cases which support the EPO’s position on description amendments, however (see for example T 1024/18, T 2766/17, T 2293/18, and T 0121/20), which means a referral to the Enlarged Board on this issue may be made in the not too distant future.

Petition for review –Article 112(a) EPC

R 0003/22 : Method for notifying interference measurement reference information, method and device for measuring interference / ZTE Corporation

EBA decision, 22 November 2022

Chair: I. Beckedorf

Members: W. Sekretaruk, B. Willems, T. Bokor and P. K. Nerdrum

The EBA considered a patentee’s petition for review of the TBA’s decision to terminate its appeal proceedings.

The basis for the petition was that the TBA had failed to consider relevant submissions which indicated that the appeal proceedings had been terminated in error. The patentee asserted that this failure by the TBA amounted to a fundamental procedural defect as well as a fundamental violation of its right to be heard. The patentee had withdrawn its appeal in error, but it subsequently sought to inform the TBA of the mistake and asked that the appeal be allowed to continue. The Registrar of the Board responded that the proceedings had been closed. The patentee subsequently requested the formal correction of its error under rule 139 EPC. The Registrar’s response was that the proceedings had been terminated and that the TBA was no longer competent to deal with the case. The patentee, referring to the Registrar’s communications, then requested a reasoned decision under article 112 EPC. No decision was issued and so a petition for review was filed.

The EBA agreed with the patentee that according to article 112(a) EPC, the patentee’s petition against the TBA’s decision to terminate the appeal proceedings was admissible. In considering the allowability of the petition, the EBA interpreted the patentee’s request to correct its error to be a relevant request within the meaning of rule 104(b) EPC. For this reason, the EBA held that the TBA’s refusal to consider this request was a fundamental procedural defect according to article 112(a) EPC. The question of whether the TBA’s decision also amounted to a fundamental violation of the patentee’s right to be heard was left open. The patentee’s petition was held to be allowable and the EBA ordered that the appeal proceedings before the TBA should be reopened.

Opposition division’s alleged ‘suggestion’ to delete claims – rule 103(1)(a) EPC

T 1109/18: Consumables / Givaudan SA

TBA decision, 6 October 2022

Chair: A. Haderlein

Members: M. Ansorge and A. Jimenez

This was an appeal against the Opposition Division’s interlocutory decision to maintain EP 2 079 319 in amended form. The opponents had requested that the patent (which concerns the provision of consumables having enhanced sweetness) be revoked under article 100(a) EPC (lack of novelty and lack of inventive step), article 100(b) EPC and article 100(c) EPC. The Opposition Division decided, inter alia, that the set of claims of then auxiliary request 7, filed during the oral proceedings, met the requirements of the EPC. The decision is interesting for its consideration of allegations that the Opposition Division had advised the proprietor on claim amendments. During the appeal, Opponent 2 requested that the appeal fee be reimbursed under rule 103(1)(a) EPC, on the grounds that there had not been the opportunity to argue against the admission of the then auxiliary request 7 and that the Opposition Division had made a suggestion to the benefit of the proprietor concerning how to successfully modify its claim requests. Under rule 103(1)(a) EPC, the appeal fee is to be reimbursed if such reimbursement is equitable by reason of a substantial procedural violation.

The TBA rejected the substantive grounds for opposition and upheld claims 1 and 13 of the main request at the oral proceedings (previously auxiliary request 13 filed with the proprietor’s reply to the opponents’ grounds of appeal). In relation to the allegation of a substantial procedural violation, the TBA did not accept Opponent 2’s argument that there had not been an opportunity during the oral proceedings before the Opposition Division to present comments against the admission of the then auxiliary request 7. The Opposition Division decision recorded that the opponents had submitted that the request was filed late in violation of rule 116 EPC.

Opponent 2 had also argued that the Opposition Division was not impartial and that it ‘actively suggested to the benefit of the proprietor how to successfully amend the claim requests’. The minutes of the hearing before the Opposition Division recorded that ‘the opposition division decided not to admit auxiliary requests 2-6 into proceedings, but to offer the patent proprietor, if he so whishes [sic], the occasion to introduce corresponding auxiliary requests without the use claims’. Later it was recorded that ‘Ch announced the decision that… AR2-6 are admitted under the condition that all use claims were deleted’.

The TBA decision emphasises the need for the Opposition Division to remain impartial and neutral, and to refrain from giving one-sided assistance in proceedings. However, the TBA also notes that the Opposition Division’s statements must be read in the context of the overall discussion, which had included comments from the opponents that auxiliary requests 2-6 should be refused as they included additional use claims. The TBA concluded that the Opposition Division was seeking to strike a balance between the interests of the parties and that while this lead to a ‘rather unfortunate’ course of events, the Opposition Division’s behaviour did not amount to a procedural violation of such severity that it could be qualified as substantial within the meaning of rule 103(1)(a) EPC.

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